By Failing to Prepare, You Are Preparing to Fail: Incorporate Planned Demonstratives Before The Oral Hearing

People learn best in different ways. Auditory learners would rather listen to things being explained. Visual learners absorb material best by looking at graphics, watching a demonstration, or reading. Kinesthetic learners prefer processing information through hands-on experiences. Most people are primarily visual learners. But regardless of how any given judge or juror prefers to learn, demonstrative exhibits at trial can serve as powerful tools for persuading all types of learners.

Compared to district court patent litigations, post-grant proceedings are quick. Here one year and gone the next. And those proceedings before the Board are conducted on paper, culminating in a final oral hearing where each side gets just one hour (including rebuttal time) to sway the APJs on their technically dense and legally complex patent issues.

Given the speedy schedule and short oral hearing, planning ahead for the hearing can be tough. But the Board recently reminded parties of the benefits of doing just that. By the time the proceeding reaches final oral hearing, nothing new can be presented—no new evidence, no new arguments. Specifically, parties who fail to plan their demonstrative exhibits early risk having them excluded. To avoid this danger, incorporate demonstratives in the petition, response, opposition, motions, replies, declarations, cross-examination observations, or other exhibits in advance of the hearing.

In Spectra Logic, the Board excluded 24 slides challenged for presenting figures that were not identical to the those in the trial history, and excluded (apparently sua sponte) an additional slide (#51) as well. Only two challenged slides survived, the Board agreeing that they contained arguments made in the brief, even if restated in a slightly different fashion.

Spectra Logic Corp. v. Overland Storage, Inc., IPR2013-00357, Paper 24 (PTAB July 22, 2014) (citing Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)).